Featured Domains

AOL Sues Advertise.com for Trademark Infringement

Apparently AOL thinks it owns every domain name that is some variation of “Advertising”.

The company just filed a lawsuit against Advertise.com. Advertise.com was formerly known as ABCsearch.com until it bought the domain name Advertise.com for an undisclosed price earlier his year.

The lawsuit claims:

…Advertise.com recently commenced use of the virtually identical and confusingly similar designation Advertise.com and design in connection with the same and complimentary services as those offered by Plaintiffs under their federally-registered Advertising.com name and marks and their Ad.com name and marks.

AOL claims this could cause confusion amongst people who think Advertise.com is endorsed by or affiliated with AOL’s Advertising.com and Ad.com trademarks.

Of course, AOL’s claim of trademark rights to Ad.com is dubious at best. The company is struggling to get approval for the trademark with the USPTO. AOL has never owned the domain name Ad.com, but has called its Advertising.com unit Ad.com in the past.

AOL’s claim to Ad.com mark is part of the reason that the $1.4M sale of Ad.com fell through and is subject to a lawsuit.

A search of the USPTO database shows that AOL has three registered trademarks for Advertising.com, but all are design trademarks. Based on recent cases for challenged trademarks such as Hotels.com, the company would not be able to get a trademark simply for the word “Advertising” on the principal register.

This is exactly why trademarks for descriptive generic terms that do not distinguish the goods and services from all others should never be awarded. Even generally responsible companies can and will use such trademarks against their legitimate competitors.

The implications are even more serious for generic new gTLDs and ICANN should not be considering awarding a small number of economically advantaged individuals and corporations private monopolies in perpetuity.

First, let’s start with the most basic & clear statement of fact -> AOL has no claim, trademark or otherwise, to AD.COM.

That is the case in a nutshell. That some industry reps may have occasionally referred to Advertise.com as “AD.COM” is ultimately inconsequential, and will not hold water in Federal court. For AOL to insinuate that they have established some rights to AD.COM is fallacious, dishonest, and will not be upheld in court.

I believe the tact that most domain bloggers and domain board members have taken of constantly talking about cybersqatters is backfiring. All it does is raise the heat on everyone.

Why? because most people think that anyone with more than one domain is a cybersquatter, and this perception is not going to change no matter how many rants people post.

So to all the generic domain holders who go on the boards and blab on about cybersquatters, all I can say is you made the bed now you have to sleep in it. Your self rightous nonsense will come back to haunt you.

The fact of the matter is that CyberSqatting is not illegal in most countries and there is no way to stop it.

Obviously Geo domains are easy targets for incorporated locals and the list goes on and on. In an attempt to paint themselves as clean many generic domain holders feel the need to paint others black.

So for example, why doesn’t Nevada have a right to NevadaRealEstate.com, and why doesn’t SanDiego have a right to SanDiegoRealestate.com etc..
etc…?

This common law excuse for threatening everyone at the Moniker Traffic auction is nothing. This lawsuit aagainst Advertise.com, which is really about putting pressure on anyone who wants to claim rights to a generic that AOL thinks it owns, is where the money is at. If this actually gets to court, it will set precedence in a flood that will permanently alter domains, trademarks, and this whole messy, sticky business that no one wanted to deal with in such a public manner.

Andrew: I agree with you, there were probably a lot of letters flying back and forth between the two companies in the past few weeks or months, and so Advertise.com sued first to protect themselves. Although, for all we know, none of these suits might actually been served on the other parties yet, and we’re seeing them before they’ve seen them!

>This is exactly why trademarks for >descriptive generic terms that do not >distinguish the goods and services from all >others should never be awarded. Even >generally responsible companies can and >will use such trademarks against their >legitimate competitors.

The dictionary definition of twitter is “To utter a succession of light chirping or tremulous sounds; chirrup.”

Twitter Inc, is not using the word “Twitter” to sell market or manufacture chirping noises it is using “Twitter” to brand its Social networking and microblogging service.
(In the same way Apple Inc. sell computers not actual apples.)

Twitter Inc, therefore believes in its use of the word “Twitter” for social networking and microblogging it distinguishes itself from all other social networking and microblogging services.

That’s a pretty nice letter really and to be fair to Twitter Inc. they are required to act against people using names which appear to be infringing their marks otherwise they could loose the right to defend their marks.

The problem for you is it could appear that mytwitterbutler.com would be unlikely to exist if twitter.com didn’t exist and therefore your service would have been unlikely to have been written if Twitter’s service did not exist.

You’re also charging for your service, even if it is to cover your costs, so Twitter Inc. may deem you’re benefiting directly from their business, marks and reputation. And that could get seriously expensive if they are able to successfully defend their marks against you.

The question for Twitter Inc, with their “tweet” mark filing is – Does their mark distinguish their goods and services from all others within the Social networking and microblogging service sphere?

Are there already [goods or] services from third parties which exist prior to the filing date? And what is the relationship of those third parties to Twitter Inc. and its services?

It is worth bearing in mind that the registration of a mark simply serves to publicly document use from a given time. Concentrating too much on a “piece of paper” to grant rights allows the unscrupulous an opportunity to try and avail themselves of others property simply by securing the necessary “piece of paper”.

What is more important is whether the underlying product or service is being infringed.